2. ‍‍Article 123(3) EPC – extension of the protection conferred

In T 653/16 the appellant (opponent) took the view that changing the category of claim 1 as granted from one directed to a device (floatable harbour power supply) to a method claim for carrying out a work method (method for supplying external power to a ship in the harbour) using the device extended the scope of protection since the change encompassed an additional physical entity in the form of a ship. The board disagreed, noting that, when a claim category was changed, the scope of protection provided by the claim categories in the previous version of the patent had to be compared with that conferred by the new claim category introduced by the amendment. In the case in hand, the patent as granted had solely contained claims directed to a physical entity per se. The Enlarged Board of Appeal had acknowledged that it was a fundamental principle of the EPC that any patent which claimed a physical entity per se conferred absolute protection upon that entity, i.e. for all uses of the entity, whether known or unknown (G 2/88, OJ 1990, 93). Contrary to the appellant's opinion, the scope of protection conferred by the patent as amended in line with auxiliary request 2 did not extend to cover the ship since that request was no longer directed to physical entities – for want of any device claims – and thus could not confer protection on any entity.

In T 131/15 the narrow definition of the feature at issue in claim 1 of the granted patent, as advocated by the opponent (namely "opposite direction" interpreted in a precise geometrical sense), would have had the effect that none of the disclosed embodiments would have fallen within the scope of protection of the claim. However, the board highlighted that, in determining whether the requirements of Art. 123(3) EPC 1973 were met, it was not sufficient to look only at the claims in isolation. The approach to be followed was set out in G 2/88 (OJ EPO 1990, 93) with reference to Art. 69(1) EPC 1973 and its Protocol. In the light of these principles, the board came to the following conclusion: Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, but where a definition of the expression may be derived from the patent itself which would locate (at least some of) the disclosed embodiments within the ambit of the claim, and provided this definition was not manifestly unreasonable, having regard to the normal meaning of the words used in the expression, then in judging compliance with the requirements of Art. 123(3) EPC, the scope of protection should normally be considered to include at least that which would fall within the terms of the claim understood according to this definition (namely "transmitted and received beams follow substantially the same path, with a small deviation to take account of the physical sizes of the transmitter and receiver").

In T 1360/13 the board rejected the appellant's (proprietor's) main request as contrary to Art. 123(2) EPC. The main request contained the drawing sheets which were part of the patent as granted. These had been exchanged according to R. 26 PCT during the international phase (receiving Office: EPO).The question in the present case was whether the deletion of the drawings and references thereto in the descriptions in several auxiliary requests had a broadening effect on the extent of protection conferred (Art. 123(3) EPC). Referring to G 2/88 (OJ EPO 1990, 93) and Art. 69 EPC, the board held that even if, after the claims have been read taken alone, no clarification seemed necessary, it could not be excluded that the description and drawings were necessary to interpret the claims, i.e. to determine the extent of the protection conferred. As a rule, the vocabulary used in a patent was unitary and dependent on the technical field of the invention and on the writer's own preferences. The description and drawings generally included explicit or implicit definitions of terms used in the claims, e.g. explanations as to the functions of the claimed features, the aims to be achieved by the invention, etc. Concentrating exclusively on the wording of the claim would mean that from the point of view of the extent of protection, the whole description and the drawings of the patent could be deleted, in which case, the intentions of the inventor would be completely ignored. The board concluded that, in view of Art. 69(1) EPC, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Art. 123(3) EPC. In the present case, the deletion of the drawings and any references to them in the description led not only to a generalisation of the teaching of the patent but also to a more general interpretation of the claim. The board distinguished its case from T 2259/09 and T 236/12.

T 1830/14 concerned the conversion of a granted method claim to a device claim. The board recalled that a claim directed to an apparatus provided absolute protection of the defined apparatus and, hence, its scope of protection was broader than the scope defined by a claim directed to a method of production or use of the same apparatus. In the case at issue, compared to the cooling apparatus defined in claim 1 as granted, in the apparatus claim 1 of the main request a feature had been deleted. The appellant argued that granted independent method claim 9 defined a cooling apparatus without the deleted feature and that, therefore, deleting this feature from the apparatus claim did not broaden the scope of protection. However, referring to the principles stated in T 82/93 (OJ EPO 1996, 274), the board observed that in the case in hand two features defining the operation of the cooling apparatus in claim 9 as granted were missing from claim 1 of the main request. The protection conferred by granted claim 9 to the defined cooling apparatus was limited to the apparatus when it was transferring heat according to the missing features, i.e. only when it was in operation. Claim 1 at issue defined the same cooling apparatus as granted claim 9, but conferred absolute protection to it, irrespectively of whether it was in operation or not. Hence, its scope of protection was broader than that of granted claim 9 and the main request did not fulfil the requirements of Art. 123(3) EPC. The board accepted auxiliary request IV, as the apparatus claim also contained the features defining the operation of the apparatus.